By Chuck Knull
There are two “registers” for federal trademarks, the Principal Register and the Supplemental Register. The Principal Register is what most everyone shoots for when they apply for a trademark registration. A registration on the Principal Register has more substance–It carries an immediate presumption that the trademark is distinctive as used on the goods or services covered by the registration. Presumptions are good things when you go to enforce your trademark.
Some trademarks, however, are too descriptive to be allowed registration on the Principal Register. In other words, the marks describe elements of the goods or services covered, without being the only way to describe such goods or services. For example, “Cooperstown Wine and Cheese Shop” could be a descriptive trademark for a wine and cheese store in Cooperstown, New York (if New York law permitted wine and cheese to be sold in the same store, which, alas, it does not). Descriptive trademarks can still be registered and this is where the Supplemental Register.
A descriptive trademark is not going to make the Principal Register without evidence that it has acquired distinctiveness over time. And it is a long time–five years. But a descriptive trademark can be applied for on the Supplemental Register, be used with the ® and, after being used for five years, can be subject to a new application on the Principal Register accompanied by a showing of use and recognition by the public in connection with the trademark.
In the meantime, nobody else can register the same mark.
While any trademark lawyer will tell his or her clients to adopt trademarks that are already distinctive, by using fanciful and suggestive terms in them, a business that is bent on using a mark that clearly conveys its goods or services to potential customers still can obtain trademark protection. It will take years and the costs of filing two applications to reach the best level of protection, but don’t underestimate the value of using the ® and blocking others in the meantime.
When in doubt about whether something is descriptive or merely suggestive (a distinction only a trademark attorney could love), it makes sense to go ahead with the trademark filing, see if you can convince the Examiner it should go on the Principal Register, and, if not, take the Supplemental Register. Why? If for no other reason than you would hate to see someone show up with a similar mark later, block your future registration, and maybe even get it on the Primary Register because they were more bold in their filing strategy.